Patents & Trademarks
An insight into patents & trademarks in Slovakian Pharma. Prepared in association with PRK Partners, a leading global law firm, this is an extract from The Pharma Legal Handbook: Slovakia, available to purchase here for USD 99.
1. What are the basic requirements to obtain patent and trademark protection?
One can file for patent protection for any invention, in all fields of technology, provided it is new, involves an inventive step, and is capable of industrial application and the fee is paid. Patent protection lasts for 20 years from the date of filing the application and is subject to yearly maintenance fees.
For trademarks, main requirements are the ability of the designation to be capable of (i) distinguishing the goods or services of one undertaking from those of other undertakings; (ii) being represented in the register of trademarks of the Industrial Property Office of the Slovak Republic (the “Industrial Property Office“) in a way that enables the respective authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor; and (iii) the payment of the fee. Trademark protection lasts for 10 years from the date of filing the application and it is possible to renew the validity of the protection on the basis of the application and subject to payment of the fee for further 10 years (repeatedly).
2. What agencies or bodies regulate patents and trademarks?
In the Slovak republic, patents and trademarks are regulated by the Industrial Property Office.
3. What products, substances, and processes can be protected by patents or trademarks and what types cannot be protected?
There is no specific list of inventions that can be patented. Any invention that meets the requirements of novelty, inventive step and capability of industrial application can be patented providing this invention is not, in particular:
- discovery, scientific theory and mathematical method;
- aesthetic creation;
- scheme, rules or methods for intellectual acts, games or doing business;
- computer program;
- presentation of information;
- plant variety and animal breed or, basically, any biological means of creation of plants or animals;
- surgical or therapeutic methods of treatment of the human body or animal body, and diagnostic methods and methods for the prevention of diseases exercised on the human body or animal body, except for products, in particular substances or mixtures, usable in any of the abovementioned methods;
- invention relating to the human body at various stages of development or relating only to the appearance of any of the elements of the human body;
- invention which commercial use would be contrary to public policy or good manners (in particular, methods of human cloning, use of human embryo for industrial or commercial purposes).
Under Slovak law, any designation, in particular words (including personal names), designs, letters, numerals, colors, the shape of goods or of the packaging of goods, or sounds, provided that such designation is capable of distinguishing itself and can be represented in the register of trademarks of the Industrial Property Office in the manner as outlined in answer No. 1 of this article shall be registered.
A designation shall not be registered if it:
- is devoid of any distinctive character;
- consists exclusively of signs or indications which may serve, in business relationships, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or provision of the services, or other characteristics of the goods or services;
- consists exclusively of signs or indications which have become customary in the current language or in established business practices;
- consists exclusively of the shape or another characteristic of the goods, which result from the nature of the goods themselves, which are necessary to obtain a technical result, or which give substantial value to the goods;
- is contrary to public policy or good manners;
- may mislead the public, in particular about the nature, quality or geographical origin of the goods or services;
- has not been authorized by the competent authorities and is to be refused pursuant to Article 6ter of the Paris Convention for the Protection of Industrial Property (the “Paris Convention”);
- its use or registration would be contrary to national law or contrary to obligations of the Slovak Republic or the European Union arising from international treaties, in particular concerning the protection of designations of origin and geographical indications, traditional terms for wine and guaranteed traditional specialties;
- includes badge or emblem of significant symbolic value, especially religious symbols;
- includes badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention and which are of public interest, unless the consent of the competent authority to their registration has been given;
- is the subject of an application which has not been manifestly filed in good faith;
- consists of, or reproduces in their essential elements, an earlier plant variety denomination registered in accordance with national law, or international treaties to which the Slovak Republic or the European Union is a party, providing for protection of plant variety rights, and which are in respect of plant varieties of the same or closely related species.
4. How can patents and trademarks be revoked?
Patent ceases to exist in the following cases:
- its validity has expired;
- owner of the patent does not pay a maintenance fee;
- owner of the patent renounces the ownership of the patent;
Patent will be revoked by the Industrial Property Office (on the basis of the third party’s application or ex offo) if:
- the conditions for its granting have not been met;
- invention is not described in a sufficient and clear manner so that it could be executed by an expert;
- the scope of the patent overreaches the scope of the original application, or if the scope of the patent granted as a result of partition of an application overreaches the scope of the6 original application;
- the scope of patent protection has been extended;
- invention cannot be protected by a patent;
- the owner of the patent holds no right to the invention;
- at the request of the owner.
Trademark ceases to exist in the following cases:
- its validity has expired, unless an application for the renewal of the validity of the protection has been filed;
- owner of the trademark renounces the ownership of the trademark.
Trademarks will be revoked by the Industrial Property Office the trademark based on the third party’s application, if:
- trademark was not the subject of factual use in connection with goods or services for a period of minimum five consecutive years;
- as consequence of activity or inactivity of the owner, the trademark has become the common name for goods or services in respect of which it is registered;
- in consequence of the manner of the use of the trademark by the owner or a third party with the consent of the owner in relation to the goods or services for which it is registered, the trademark may mislead the public, in particular on the nature, quality or geographical origin of those goods or services.
Trademarks will be revoked by the Industrial Property Office the trademark based on the concerned party’s application on grounds of a court decision under which:
- trademark containing the name and surname or picture of an individual, or his/her pseudonym, infringes the rights to the protection of the personality;
- trade mark containing the name or business name of an individual or legal person affects its reputation;
- trademark interferes with older copyrights;
- use of this trademark is an unfair competition.
The Industrial Property Office declares the trademark invalid, if the legal requirements for its registration have not been met at the time of its registration. It also declares the trademark invalid in cases in which the Industrial Property Office must refuse the registration of the trademark into the register of trademarks as a result of objections against the registration, e.g. the trademark is identical with the earlier trademark and the affected goods or services are identical with the goods or services for which the earlier trademark is protected, or because of its identity with, or similarity to, the earlier trademark and the identity or similarity of the goods or services covered by the earlier trademark there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association with the earlier trademark.
5. Are foreign patents and trademarks recognized and under what circumstances?
Under the Patent Act, a European patent granted by the EPO under the European Patent Convention has the same force as a Slovak patent, if the applicant included the Slovak Republic as a country in which it seeks patent protection. The patent owner must still submit the translation of the patent documentation into the Slovak language to the Industrial Property Office and pay the publication fee. The Slovak Republic is also a party to the Patent Cooperation Treaty which makes it possible to seek patent protection simultaneously in a large number of countries by filing a single “international” patent application. Nevertheless, the granting of the patent which would be valid for the Slovak Republic remains under the control of the Industrial Property Office in the so-called the “national phase” (the national phase follows the international phase). Nevertheless, the procedures performed during the international phase facilitate the procedures to be carried out by the Industrial Property Office during the national phase.
All European Union trademarks registered in the register of European Union trademarks maintained by the EUIPO are also valid in the Slovak Republic. The Slovak Republic is also a party to the Madrid Protocol. Thus, foreign trademarks are recognized via the WIPO’s Madrid system if the applicant includes the Slovak Republic in its application for international registration. If the Industrial Property Office does not notify the WIPO about the refusal of the trademark protection in the Slovak Republic within the statutory deadline, the international registration of the trademark has the same effects as the trademark registered in the register of trademarks of the Industrial Property Office.
6. Are there any non-patent/trademark barriers to competition to protect medicines or devices?
In case of generic medicines that have to be registered with the State Institute for Drug Control, the applicant must prove that the product to be registered is bioequivalent to the reference medicinal product which has been registered in at least one EEA member state for at least eight years. Further, the holder of the marketing authorization for the generic medicine is not allowed to place this product on the market until ten years following the marketing authorisation of the reference medicinal product.
7. Are there restrictions on the types of medicines or devices that can be granted patent and trademark protection?
There are no restrictions explicitly stated in the Slovak legislation on the types of medicines or devices that can be granted patent and trademark protection, except for the general restrictions as provided in answer No. 3 of this article.
8. Must a patent or trademark license agreement with a foreign licensor be approved or accepted by any government or regulatory body?
Patent and trademark license agreements are subject to registration with the Industrial Property Office in order to make them enforceable against third parties.